To: | MAPS Public Benefit Corporation (Lara@BrandGeek.net) |
Subject: | U.S. Trademark Application Serial No. 88350382 - MPBC - N/A |
Sent: | January 03, 2020 03:58:23 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88350382
Mark: MPBC
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Correspondence Address: BRAND GEEK/ LAW OFFICE OF LARA PEARSON L
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Applicant: MAPS Public Benefit Corporation
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: January 03, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Cannabis-specified Services Refusal –– Based on Identification – Not in Lawful Use in Commerce as of filing date – “Psychological research; Medical research; Scientific research; Pharmaceutical research; Research and development of medicines; Research and development of medicinal therapies; Medical and scientific research in the fields of psychotherapy, medical marijuana, plant-based medicines, psychedelic therapies; Research services for medical and pharmaceutical purposes”
Registration is refused for the services “Psychological research; Medical research; Scientific research; Pharmaceutical research; Research and development of medicines; Research and development of medicinal therapies; Medical and scientific research in the fields of psychotherapy, medical marijuana, plant-based medicines, psychedelic therapies; Research services for medical and pharmaceutical purposes” because the applied-for mark encompasses services that were not in lawful use in commerce as of the filing date of the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. APPLICANT SHOULD NOTE THAT THIS REFUSAL DOES NOT APPLY TO THE SERVICES “Providing medical and scientific research information in the field of clinical trials; Providing medical and scientific research information in the fields of psychedelic research, psychotherapeutic treatments and therapies, MDMA therapies, medical marijuana, LSD-assisted psychotherapy, Ibogaine-assisted treatment, Ayahuasca-assisted therapy; Conducting scientific feasibility studies; Technical research in the field of pharmaceutical studies; Technical consulting in the field of pharmaceutical studies.”
To qualify for federal service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the services to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
Here, the items or activities to which the proposed mark are applied include those that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The application identifies the following cannabis services: Psychological research; Medical research; Scientific research; Pharmaceutical research; Research and development of medicines; Research and development of medicinal therapies; Medical and scientific research in the fields of psychotherapy, medical marijuana, plant-based medicines, psychedelic therapies; Research services for medical and pharmaceutical purposes. Such services are broad enough to include services involving the use or possession of goods produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”).
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) The claimed use of the applied-for mark in connection with services featuring products that meet the definition of marijuana was not lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). Because the identified services consist of or include items or activities that are still prohibited under the Controlled Substances Act, the applicant did not have a valid filing basis for any such items or activities. To the extent the applicant’s services feature the use or possession of goods that are derived solely from cannabis plants that meet the current statutory definition of hemp, such services may be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of services to specify that all cannabis-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” Please see the complete requirement for an acceptable identification of services below.
APPLICANT SHOULD NOTE THAT THE SPECIFIC REFERENCE TO “MEDICAL MARIJUANA” IN THE IDENTIFICATION OF SERVICES WILL BE REMOVED IN THE SUGGESTED AMENDMENT BELOW, AS “MARIJUANA,” BY DEFINITION, HAS A THC LEVEL OF MORE THAN 0.3 PERCENT ON A DRY WEIGHT BASIS.
The applicant may also present arguments and evidence against this refusal.
ADVISORY – AMENDMENT TO IDENTIFICATION OF SERVICES
Applicant may adopt the following identification, if accurate. The wording that appears in bold and/or italics below represents the suggested changes. Any wording that is crossed out represents matter that must be deleted from the identification.
International Class 42: Psychological research; Medical research; Scientific research; Pharmaceutical research; Research and development of medicines; Research and development of medicinal therapies; Medical and scientific research in the fields of psychotherapy, plant-based medicines, psychedelic therapies; all of the aforementioned services involving the use or possession of hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; Providing medical and scientific research information in the field of clinical trials; Providing medical and scientific research information in the fields of psychedelic research, psychotherapeutic treatments and therapies, MDMA therapies, medical marijuana, LSD-assisted psychotherapy, Ibogaine-assisted treatment, Ayahuasca-assisted therapy; Conducting scientific feasibility studies; Technical research in the field of pharmaceutical studies; Technical consulting in the field of pharmaceutical studies; Research services for medical and pharmaceutical purposes involving hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis
Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different services or add services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the services will further limit scope, and once services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following services will be deleted from the application: Psychological research; Medical research; Scientific research; Pharmaceutical research; Research and development of medicines; Research and development of medicinal therapies; Medical and scientific research in the fields of psychotherapy, medical marijuana, plant-based medicines, psychedelic therapies; Research services for medical and pharmaceutical purposes. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following services only: Providing medical and scientific research information in the field of clinical trials; Providing medical and scientific research information in the fields of psychedelic research, psychotherapeutic treatments and therapies, MDMA therapies, medical marijuana, LSD-assisted psychotherapy, Ibogaine-assisted treatment, Ayahuasca-assisted therapy; Conducting scientific feasibility studies; Technical research in the field of pharmaceutical studies; Technical consulting in the field of pharmaceutical studies. See TMEP §718.02(a).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action.
/Lindsey H. Ben/
Lindsey H. Ben
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4239
Lindsey.Ben@uspto.gov
RESPONSE GUIDANCE